The registration of a trademark is a long, laborious process but a really necessary one – remember, this is one of the building blocks of your brand! Having a strong, registered trademark is akin to having Chuck Norris as your buddy. No-one is going to mess with you and if they try, well we all know what happens next…
Right, back to the process of registration:
- You instruct us or an IP attorney (if you have lots of spare cash) to do an availability search on your proposed name. Keep in mind that a positive search result does not necessarily mean that your application will progress to registration. The Registrar of Trademarks will examine your application and they have the last say. See the examination guidelines here. You may also instruct CIPC to do a special search, but in most instances that’s not advisable.
- Your trademark application gets lodged at CIPC – either by yourself as a private entity or through an agent.
- CIPC will then start to process your application by capturing the data and opening a paper file.
- Your application will be coded and examination searches will be done by CIPC. (See why I advise against CIPC doing the availability search for you in the first place? It’s like asking someone to write a test and then mark it themselves.)
- The searches done by CIPC are then subjected to examination for availability.
- If any official actions or maintenance are needed, CIPC will let you or your agent know.
- If an objection has been raised against your trademark application and you haven’t been able to resolve the matter with the examiner, you can request an ex parte hearing. You will need to write to the examiner / CIPC and request a hearing date.
- When all the official actions, if any, have been resolved your trademark application progress to status ‘acceptance’.
- Your trademark application then gets published in The Trademark Journal and is open to opposition for a two to three month period by other trademarks filed earlier or any other party. Opposition could result in your trademark not being registered.
- If there is opposition to your proposed trademark, you can request further hearings. This is a good time to consult a specialist attorney if you were handling your own application! There are two types of hearings:
- An interlocutory hearing, also called a procedural hearing. During the proceedings, one or more parties may regard the preliminary view taken by the Registrar on a procedural issue as being detrimental to them.
- A main hearing is a formal proceeding with each party given a chance to put their case directly to the Registrar and to listen to and respond to the other parties argument.
- When all issues have been favourably resolved, your application can the proceed to registration.
- After registration there might be some correspondence from CIPC or request for expungement of your trademark by other parties if they feel you have contravened the Trademark Act in any way.
- After this, you can call yourself the proud owner of a very valuable piece of intellectual property! You will need to renew your trademark every ten years and do some maintenance as requested by CIPC.